Ex Parte Kishioka et al

Patent Trial and Appeal Board

Feb 21, 2017

12837179 (P.T.A.B. Feb. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/837,179 07/15/2010 Hiroaki KISHIOKA Q119831 3704
65565 7590
SUGHRUE-265550
2100 PENNSYLVANIA AVE. NW
WASHINGTON, DC 20037-3213
EXAMINER
DUCHENEAUX, FRANK D
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
02/23/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SUGHRUE265550@SUGHRUE.COM
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROAKIKISHIOKA and HIROAKI FUMOTO
Appeal 2016-000449
Application 12/837,179
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1, 2, 4, and 9-11 under 35 U.S.C.
§ 103(a) over the combined prior art of Ishikawa (JP 2004-196939 A; publ.
July 15, 2004), Naito (US 2005/0038152 Al; publ. Feb. 17, 2005),
Nishiyama (JP 2009-012254 A; publ. Jan. 22, 2009), and Kawai (JP 2008-
150581 A; publ. July 3, 2008).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is stated to be Nitto Denko Corporation (App. Br.
2).
Appeal 2016-000449
Application 12/837,179
Independent claim 1 is directed to a double-sided pressure-sensitive
adhesive (PSA) tape and is illustrative of the subject matter on appeal
(emphasis added to highlight key limitation in dispute):
1. A double-sided pressure-sensitive adhesive tape,
which comprises:
a pressure-sensitive adhesive body comprising at least one
pressure-sensitive adhesive layer, the pressure-sensitive
adhesive body having a first surface and a second surface on a
side of the pressure-sensitive body opposite to the first surface;
wherein the first and second surfaces are pressure-sensitive
adhesive surfaces;
a release liner A provided on the second surface, having a
haze value of 1.5% or less, and having a peeling strength with
respect to the pressure-sensitive adhesive body according to a
180° peeling test of 1.0 N/50 mm or less; and
a release liner B provided on the first surface and having a
peeling strength with respect to the pressure-sensitive adhesive
body according to a 180° peeling test of 0.03 N/50 mm or more,
wherein a difference between the peeling strength
according to the 180° peeling test of the release liner A and the
peeling strength according to the 180° peeling test of the release
liner B [(peeling strength of release liner A) - (peeling strength
of release liner B)] is from 0.05 to 0.90 N/50 mm, and
wherein the pressure-sensitive adhesive layer has a
thickness of 10 to 250 pm and is formed from a pressure-
sensitive adhesive composition which contains an acrylic
polymer constituted from one or more monomer components
including at least one monomer component selected from the
group consisting of an alkyl (meth)acrylate having an alkyl group
with a number of carbons of from 1 to 12, an alkoxy alkyl
(meth)acrylate, an aliphatic ring-containing (meth)acrylate and
an aromatic ring-containing (meth)acrylate,
wherein a weight average molecular weight of a soluble
fraction (sol fraction) obtained from ethyl acetate extraction of
the pressure-sensitive adhesive layer is from 50,000 to 270,000;
and
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Appeal 2016-000449
Application 12/837,179
wherein the pressure-sensitive adhesive layer has a
thickness unevenness of a whole surface of 0.030 pm or less and
the thickness unevenness of the whole surface of the pressure-
sensitive adhesive layer has a value obtained by converting an
interference fringe obtained using a laser interferometer into a
thickness hi of the pressure-sensitive adhesive layer in
accordance with fringe scanning method (stripe scanning
method) and then making a calculation using the hi value
obtained within a measurement range with a diameter of 30 mm
in accordance with the following formula (1):
(Thktass smevsnjitss of the whole sari;®;;} \ j*
wherein i is an integer of from 1 to N, and N is a number
of samplings.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellants’
claims is unpatentable over the applied prior art. We sustain the Examiner’s
§ 103(a) rejection essentially for the reasons set out by the Examiner in the
Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
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Application 12/837,179
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In reFritch, 972 F.2d 1260, 1264—65 (Fed.
Cir. 1992).
Appellants’ principal argument regarding claim 1 is that there is no
reason to arrive at a release liner having a haze value of 1.5% or less in
Ishikawa based on Nishiyama, because a) Nishiyama only teaches a haze
value if its release film is 3.5% or less (App. Br. 12), b) there is no teaching
in either reference regarding controlling both the haze and the peeling
strength of the release liner(s) (App. Br. 13), c) the Examiner’s position is
based on impermissible hindsight (App. Br. 15—17), d) there is insufficient
motivation to combine Ishikawa with Nishiyama (App. Br. 18—20) and, e)
Nishiyama is not analogous art (App. Br. 21). These arguments are
reiterated in the Reply Brief.
Appellants’ arguments are not persuasive of reversible error. The
Examiner aptly points out that, contrary to the Appellants’ position,
Nishiyama is analogous art (e.g., Ans. 23 (explaining that Nishiyama’s
optical member, adhesive layer and mold release film is akin to the PSA tape
used to assemble two optical members in Ishikawa)). Indeed, Appellants’
invention as disclosed in the Specification, Ishikawa, and Nishiyama are all
related to assembly of optical components to one another e.g., of a polarizing
plate and a liquid crystal sheet to make an LCD display/screen (Spec. 12;
Ishikawa 12; Nishikawa 14). Nishikawa states that quality assurance and
inspections of LCD components are becoming increasingly severe
(Nishikawa 4). Nishikawa’s invention is to ensure that the mold release
layer (i.e., akin to a release liner) of its adhesive is as transparent as possible,
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Appeal 2016-000449
Application 12/837,179
with preferably less than 3.5% haze value so that defects may be seen and
one does not assemble parts that are defective/dirty (e.g., Nishikawa 143).
One or ordinary skill would have inferred that this encompasses a haze value
as low as possible, including less than 1.5% as recited in claim 1, (see, e.g.,
Ans. 10). One of ordinary skill would have also been motivated by this
disclosure to make one or both of the release liners/separators (which have a
differing peeling force from each other as recited in claim 1) in Ishikawa
with a low haze value (i.e., as transparent as possible), since Ishikawa is also
assembling components of an LCD screen to one another with its double­
sided PSA tape (e.g., Ans. 6, 8, 18).
With respect to the weight average molecular weight of a soluble
fraction and the thickness unevenness/uniformity of the PSA layer as recited
in claim 1, a preponderance of the evidence supports the Examiner’s
obviousness determinations of these properties based on the combined prior
art (e.g., Ans. 26, 27, 30-32). See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art”); In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures”).
Further, as we “take account of the inferences and creative steps that a
person of ordinary skill in the art would employ,” we find a person of
ordinary skill in the art would have, within their level of skill, made the
separators of Ishikawa as haze free as possible, and made the PSA layer as
uniform as possible, and used a PSA having a weight average molecular
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Application 12/837,179
weight of its soluble fraction within the claimed range of 50,000 to 270,000,
based on the combined teachings of the applied prior art for reasons
articulated by the Examiner (see generally Ans.2). KSR Int’l, 550 U.S. at
418; see also id. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton”); Ball Aerosol & Specialty Container,
Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of “the inferences and creative steps,” as well as routine steps, that an
ordinary artisan would employ)).
Accordingly, we affirm the Examiner’s prior art rejection of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
DECISION
The Examiner’s § 103(a) rejection is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
2 The Examiner did not, however, need to repeat all of Appellants’
arguments made in the Appeal Brief at length as was done in this Answer.
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